The Federal Circuit recently issued two trademark decisions on the subject of third party use evidence and the weight that should be given to a crowded field argument. Both of these cases deserve attention. These decisions will have a significant impact on future decisions rendered by the Trademark Trial and Appeal Board (“TTAB” or the “Board”) and will also impact the decisions of USPTO examining attorneys. This week’s post will feature the case of Juice Generation, Inc. v. GS Enterprises LLC, ____ F.3d ___, 2015 WL 4400033 (Fed. Cir. July 20, 2015).

Juice Generation, Inc. (“Juice Generation”) applied to the USPTO to register the mark PEACE LOVE AND JUICE (as both a standard character mark & a design mark) for juice bar services. GS Enterprises (“GS”) opposed the application on the ground that it would cause a likelihood of confusion with its family of marks, containing the phrase “PEACE & LOVE” for restaurant services. The Board sustained the opposition and refused to register Juice Generation’s mark and Juice Generation appealed the decision. The Federal Circuit vacated the Board’s decision and remanded the case to the Board so it could consider and evaluate the trademark as a whole because the Court held there was no evidence to suggest it considered the mark in its entirety. Moreover, the Federal Circuit stated consideration must also be given to the third-party use evidence.

The Board evaluated whether there was a likelihood of confusion by looking at the thirteen factors identified in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). See our web page entitled, Likelihood Of Confusion Refusals, 2(d) Refusal, where all thirteen factors are set forth. The Board reviewed the factors and determined that the similarities between the marks, the services, and the trade channels, as well as the similarities of the buyers and the purchasing conditions weighed in favor of finding a likelihood of confusion. Interestingly enough, when reviewing factor six, the number of similar marks in use, the Board held that either this factor was neutral or that it weighed slightly against finding confusion. The Court held that the Board did not sufficiently assess the strengths or weaknesses of GS’s marks and this is directly related to the sixth factor. Further, the Federal Circuit Court held that the Board gave inadequate consideration to Juice Generation’s three-word mark as a whole.

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